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`Paper No. __
`Date Filed: April 13, 2017
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`Filed On Behalf Of:
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`Novartis AG
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`By:
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`Nicholas N. Kallas
`NKallas@fchs.com
`ZortressAfinitorIPR@fchs.com
`(212) 218-2100
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WEST-WARD PHARMACEUTICALS INTERNATIONAL LIMITED,
`Petitioner
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`v.
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`NOVARTIS AG,
`Patent Owner
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`Inter Partes Review No. 2017-01078
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`U.S. Patent 9,006,224
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`PATENT OWNER NOVARTIS’S RESPONSE TO
`PETITIONER WEST-WARD’S MOTION FOR JOINDER
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`Patent Owner Novartis AG (“Novartis”) does not oppose the March 13,
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`2017 joinder motion of West-Ward Pharmaceuticals International Limited (“West-
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`Ward”). Nevertheless, to advance the “just, speedy, and inexpensive resolution” of
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`joint proceedings, Novartis respectfully requests that the Board order West-Ward
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`in joint proceedings (i) to rely solely on the petition and the evidence filed by Par
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`in IPR2016-01479; (ii) to consolidate all briefing under the page limits of 37
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`C.F.R. § 42.24 and to share the pages that are allotted for written work product to
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`Par in IPR2016-01479; and (iii) to share with Par the time that is or will be allotted
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`for cross and redirect examination to Par in the IPR2016-01479.
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`Precedent exists for those limitations. See, e.g., Bungie, Inc. v. Acceleration
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`Bay, LLC, IPR2016-00934, Paper 11 (July 8, 2016) at 13-14 (granting Bungie’s
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`motion for joinder, ordering that petitioners consolidate all briefing under the page
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`limits of 37 C.F.R. § 42.24, and ordering that Bungie not file any additional pages
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`to address points of disagreement with the Activision petitioners without first
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`moving for and obtaining the Board’s permission); ZTE USA, Inc. v. Evolved
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`Wireless LLC, IPR2016-01280, Paper 8 (Dec. 21, 2016) at 4 (consolidating
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`identical IPR petitions sua sponte, and ordering that petitioners “will share all time
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`permitted for depositions and will file all papers, except for papers that do not
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`involve the other petitioner, as a consolidated paper, and that consolidated papers
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`will not be given additional pages or words unless otherwise authorized by the
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`- 1 -
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`Board.”). Cf. Teva Pharms. USA, Inc. v. Viiv Healthcare Co., IPR2015-00550,
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`Paper 11 (June 25, 2015) at 6 (denying joinder where joinder raised the prospect
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`that the parties and the Board would have to manage burdensome additional pages
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`of briefing).
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`In addition, Novartis respectfully advises the Board that West-Ward is a
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`party to litigation against Novartis on U.S. Patent No. 9,006,224 (“the ’224
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`Patent”) that is currently pending in the District Court for the District of Delaware
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`and scheduled for trial May 22-24, 2017. See Patent Owner’s Mandatory Notices
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`Under 37 C.F.R. § 42.8(a)(2), Paper 4 at page 1; Novartis Pharm. Corp. v. West-
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`Ward Pharm. Int’l Ltd., C.A. No. 15-474-RGA (D. Del.). On the current schedule
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`in IPR2016-01479, Novartis’s Patent Owner Response is due on May 11, 2017,
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`before the May 22-24, 2017 District Court trial commences. But the Reply of
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`Petitioners (including West-Ward, should IPR2017-01078 be joined to the
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`proceeding in IPR2016-01479) will be due on August 3, 2017, after the District
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`Court trial is completed. Thus, Petitioners, but not Novartis, would have an
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`opportunity to cite District Court trial testimony regarding the ’224 Patent to the
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`Board. The current schedule in IPR2016-01479 may thereby create unfairness to
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`Novartis if citation of the District Court trial testimony occurs. Novartis wishes to
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`inform the Board that, should Petitioners seek to rely on incomplete or misleading
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`excerpts from the May 2017 District Court trial record, it may be necessary for
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`- 2 -
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`Novartis to request permission from the Board to file a Sur-Reply or seek
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`alternative means of addressing such incomplete or misleading citations.
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`Respectfully submitted,
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`/Nicholas N. Kallas/
`Nicholas N. Kallas
`Registration No. 31,530
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
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`Dated: April 13, 2017
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`- 3 -
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the foregoing Patent Owner Novartis’s Response To
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`Petitioner West-Ward’s Motion For Joinder Of Its Petition was served on April 13,
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`2017 by causing it to be sent by email to counsel for Petitioner West-Ward
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`Pharmaceuticals International Limited in IPR2017-01078 and Petitioner Par
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`Pharmaceutical, Inc. in IPR2016-01479 at the following email addresses:
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`West-Ward Pharmaceuticals International Limited
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`Keith A. Zullow (kzullow@goodwinprocter.com)
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`Marta E. Delsignore (mdelsignore@goodwinprocter.com)
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`Par Pharmaceutical, Inc.
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`Daniel Brown (daniel.brown@lw.com)
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`Jonathan M. Strang (jonathan.strang@lw.com)
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`/Nicholas N. Kallas/
`Nicholas N. Kallas
`Registration No. 31,530
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
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`
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`Dated: April 13, 2017
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`- 4 -
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